Introduction
By Resolution No. 0351-2023/Csd-Indecopi, INDECOPI’s Distinctive Signs Commission resolved an opposition filed by Banco de Crédito del Perú (BCP) against the trademark application for registration of the sign “YAPA” and logo, made by the company Procustodia S.R.L. This case focused on the possible confusion and protection of trademark rights previously registered by BCP, in particular its well-known trademark “YAPE”.
Facts of the case
The conflict arose when Procustodia S.R.L. applied for the registration of the trademark “YAPA” for goods in class 09 of the International Classification, related to electronic devices and software. BCP filed an opposition arguing that the proposed mark was graphically and phonetically similar to its family of trademarks, including “YAPE”, widely recognized in the financial sector for its use in mobile payment applications.
Arguments of the parties
Banco de Crédito del Perú (BCP) based its opposition by pointing out that “YAPE” is a well-known trademark, widely recognized in the Peruvian market due to its continuous use, advertising campaigns and direct association with digital financial services. According to BCP, the graphic and phonetic similarity between “YAPE” and “YAPA” could generate confusion among consumers, who could mistakenly relate both trademarks. This confusion, according to the bank, could lead to an undue exploitation of the reputation built by “YAPE”. On the other hand, Procustodia S.R.L. did not file a formal response to the oppositions, leaving BCP the task of proving both the notoriety of its trademark and the likelihood of confusion.
INDECOPI’s Resolution
The Commission evaluated the background, arguments and evidence submitted by BCP, which included data on the notoriety of “YAPE” and the likelihood of confusion between the marks. As a result, it resolved the following:
- Declaration of notoriety: The notoriety of the trademark “YAPE” in the Peruvian market was reaffirmed, based on its wide recognition and use.
- Refusal of registration: The application for registration of “YAPA” was denied, considering that its use could mislead consumers and harm BCP’s trademark rights.
| Sign requested | Registered Marga |
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SUPERYAPA ENTEL |
Significance of the ruling
This case highlights INDECOPI’s commitment to the defense of intellectual property rights, particularly when it comes to well-known trademarks. The ruling protects not only trademark owners, but also consumers, who could be misled by similarities between trademarks that share distinctive elements.
In addition, the decision sends a clear message about the importance of conducting an analysis prior to registering trademarks, making sure that there are no conflicts with already established rights. For companies such as BCP, the ruling ratifies the value of investing in the protection of their trademark identity and strengthens their position in the market.
Conclusion
Resolution No. 0351-2023 underlines the relevance of conducting exhaustive prior studies before registering a trademark in order to avoid legal conflicts. In addition, it highlights the role of INDECOPI in the protection of recognized trademarks, ensuring consumer confidence in the products and services available in the market.
Source: https://img.lpderecho.pe/wp-content/uploads/2024/11/RESOLUCION-No-0351-2023_CSD-INDECOPI-LPDerecho.pdf